Intellectual property: What Is Priority And Why Is It Important?

To be patentable, an invention must be novel and innovative. It’s critical to file a patent application before publicly disclosing an invention, as doing so might imply the idea isn’t considered novel by the patent office.

However, because you have not had the chance to publicly disclose, discuss, or share your innovation with prospective investors, users, or licensees before submitting and litigating a patent application, you may not know if a granted patent will be advantageous.

Furthermore, because ‘international’ patents do not exist, you may want to file numerous national patent applications, a European patent application, and/or a PCT patent application to protect your invention in various nations. However, because submitting and prosecuting these applications may be costly, you may not want to start these processes if you aren’t sure if you want or need a granted patent.

In this case, you can register your initial application in a nation where filing patent applications is reasonably inexpensive. After you’ve filed, you’ll have a 12-month priority period during which you can:

• Test your invention on the market – a product could be put on sale for consumers to buy.
• Attract investors – you can demonstrate and discuss your invention with potential investors.
• Further develop your invention – you can use this time to gather more experimental data and/or identify the key features of the invention you want to protect.

Following the filing of this first application, you have 12 months to decide on (and file) any additional national, European, or PCT applications relating to the same invention, keeping in mind that while these additional filings provide a wider geographical area of protection, they also come at a higher cost. Because of an applicant’s ‘right to priority,’ you have a 12-month period in which to file these additional applications.

What does it mean to have a ‘right to priority’?

A priority right is granted to an applicant who files the first patent application for an invention in a member state of the Paris Convention or the World Trade Organization (WTO). This privilege permits an applicant to file a second patent application for the same invention within 12 months. A statement of precedence to the first application should be included in the second application.

The priority date for the second application is determined by a legitimate statement of priority. When assessing whether an invention is novel and innovative, the priority date is considered.

The patent office considers everything made accessible to the public anywhere in the globe before the priority date of the application in making this determination. By default, the priority date is the application’s filing date. The priority date can alternatively be the filing date of the first application for the same subject matter if the priority claim is legitimate.

In essence, a valid priority claim establishes an earlier cut-off date for when previous art must be publicly revealed before it can be considered in determining whether an invention is novel and creative.

A priority application does not have to be filed in the same nation as the preceding application, but it must be filed in a country that recognizes the right to priority (e.g. any Paris Convention or WTO member state). Within the 12-month priority period, a PCT application can claim priority over an earlier application, and several applications can claim priority over the initial application.

Filing a low-cost, early-stage first application might be a crucial step in the patent application process if you want to avoid filing several, possibly costly applications while still establishing a priority date for your invention. This implies that any advances or contributions to the state of the art made after the priority date cannot be used by an Examiner in determining whether the invention is novel and inventive during the assessment of these subsequent applications. As a result, having a priority date set early on may be quite beneficial.